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Japan and Vietnam implemented a Patent Prosecution Highway (PPH) pilot program that took effect on 01 April 2016. 

In 2014, approximately 50% of the total filed applications at the NOIP remained pending and unexamined. To facilitate the reduction of backlog at NOIP and expedite the patent examination process, NOIP signed its first Patent Prosecution Highway (PPH) agreement with JPO in October 2015.

The PPH pilot program commenced with a capped number of requests on 1 April 2016 and will end on 31 March 2019. An application which has received allowance or grant by the Office of First Filing (OFF) can file a request under the PPH to fast track the examination of its corresponding claims in its corresponding Vietnamese application in the Office of Second Filing (OSF) on the basis of bilateral office agreements.

There may be an extension of the PPH pilot program after a joint NOIP-JPO review and assessment of the program implementation.

This PPH pilot program may be requested using the national work products from the JPO or from the NOIP. It is also possible that NOIP will sign similar agreements with other patent offices in the future if the outcome of this PPH trial proves favourable.

Given the increasing numbers of worldwide patent filings, there is a need to provide an alternative route to expedite the examination of these applications.The PPH program not only speeds up the prosecution of patent cases, but is also very cost-effective. While there are shortcomings with the PPH option, the benefits will outweigh these shortcomings as the PPH network grows. There is no doubt that most ASEAN member countries will continue with their respective PPH programs over the coming years.

 

 

 

木曜, 26 5月 2016 02:31

Update: Myanmar Trademark Practice

With significant changes in the political landscape of Myanmar (also known as Burma), there are similar expectations for corresponding changes in the economic and business practices as well. This further affects the expectations of IP holders to better protect their rights in this country. Currently, Myanmar is working with the World Intellectual Property office (WIPO) and World Trademarks Office (WTO) to introduce new IP laws which include legislation covering trademarks.

The present laws in Myanmar do not provide for a formal system of registration of IP rights inasmuch as there is no statutory protection for IP rights in Myanmar. The present provisions in place are based on the common law system, where trademarks can be protected by filing a declaration of ownership wherein the document serves as proof of ownership of the trademark in question. Local practice further requires the publication of a cautionary notice in a local newspaper to inform the public of the ownership rights vested in the trademark. Given that there is no formal registration procedure in place, there is no examination of marks owned by different proprietors.

However, a draft trademark law, currently awaiting final approval, seeks to establish a trademark regime more in sync with international practice. The draft law envisages the protection of trademarks, trade names and well-known marks, and discusses a 10 year period of registration, with renewal of trademarks possible at 10 year intervals. The draft law also discusses examination of marks and provides third parties with an opportunity to oppose published marks. However, once the law is in place, a major impact will be that trademark proprietors who have registered declarations of ownerships with the Office of the Registry of Deeds and Assurances will be required to apply for a fresh application. These proprietors, however, are likely to receive the benefit of a grace period of three years after the implementation of the new law to file a new application and are also likely to receive priority under the new system. It is not clear at this stage whether prior use of a mark will be taken into consideration once the new laws are implemented, given that the new system will follow the first to file principle.

While the draft trademark law is pending, certain changes to the practice have been implemented by the Office of the Registry of Deeds and Assurances that directly impact trademark owners. Under the old system, an assignment of trademarks was recorded by simply filing the Deed of Assignment together with a Declaration of Assignment. There were no specific requirements with respect to the contents of the Deed of Assignment. Also, there was a flat stamp duty rate that was applied to foreign-currency denominated documents. With the implementation of the new tax laws, all assignment documents filed in Myanmar are required to disclose a nominal value of the transfer, set at a minimum of US$100. A Stamp Fee of 3% based on the declared value is required to be paid for any transfer/sale/assignment of property. And, the registration fees for the assignment recordal have been set at .002% of the declared value.

To record the assignment, a trademark owner will be required to submit a Declaration of Assignment of Ownership of Trademark, a power of attorney (one from the assignor and one from the assignee), a certified copy of the executed assignment deed covering the relevant marks/goods in the jurisdiction concerned, and copies of the registration certificates for the trademarks to be assigned.

Conclusion

With the approaching implementation of a new IP regime, IP owners can expect a more efficient and structured registration process for trademark proprietors. Moreover, the implementation of the new law is expected to lead to the creation of government agencies such as the Intellectual Property Office of Myanmar and the creation of IP courts. However, it remains to be seen whether the laws are likely to be implemented soon and whether the new laws will in fact continue to effectively protect the rights granted to trademark owners under the old regime.

 

 

This article was first published in Asia IP on March 31, 2016. For more information, please visit http://www.asiaiplaw.com/ .

 

 

 

 

水曜, 23 3月 2016 06:06

Plagiarism in Advertising Law

Advertising agencies that make imitation or adaptation of work of others are producing what is illegal, therefore immoral and unethical.

In a recent case, Dentsu Utama, a Malaysian advertising agency, was accused of plagiarizing the artwork of British designer, Tom Anders. The ad agency however, has vehemently defended these accusations. The artwork by Dentsu Utama was for a World Wildlife Foundation (WWF) advertisement campaign which went on to win a prestigious award for advertising.

The respective artworks are shown in the diagram below.  

Malaysia020816a Tom vs Dentsu

Tom claimed copyright infringement. Tom claims that Dentsu Utama copied his artwork, and the level of copying was considered to be misappropriation.

Sources indicate that Tom’s artwork was published on the 27th of April 2014 while Dentsu Utama’s artwork was published on 22nd of July 2015. In light of the publication dates, Tom’s artwork would be the first publication.

Using a lay comparison, both the artwork shows that Tom’s gorilla is remarkably similar to Dentsu Utama’s. Both parties’ artwork makes use of circles; however, Dentsu Utama may have adapted the circles to give the impression of dissimilarity.  

 

Malaysia020816b

Erik Johansson’s ‘The Architect’ (left) and Dentsu Utama’s ad for Web Privacy Watch (right)

Dentsu Utama insists that the work is original and any similarity was coincidence. This defense appears weak as the advertisement agency has a history of producing artwork similar to others. In another cases, the Malaysian Association of Accredited Advertising Agents (4As) decided that the 'Professional Man' (above) was similar to the work of Swedish artist Erik Johansson's entitled The Architect.

The Association of Accredited Advertising Agents (4As) (organizers of the Kancil Awards) have disqualified Dentsu’s work and revoked the Kancil awarded to Dentsu Utama. In response to the decision by the 4As, Dentsu Utama has quit the 4As on the 8th of January 2016.

The Malaysian Intellectual Property Office (MyIPO) has recently introduced a voluntary notification system. It is highly advisable to make use of it as an added form of copyright protection for makers of any copyrightable work.

 

This article was first published in Volume 11, Issue 1 of the GALA Gazette. For more information, please visit http://galalaw.com.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

When a patent owner desires to abandon a patent, usually they simply do so by non-action, i.e. by stopping payment of the annuity fees. However, the same may not be true in Indonesia, and this has now become one of the most debated subjects among IP practitioners in this territory.

The relevant provisions are Articles 39, 88, 90 and 115 of Patent Law No. 14 of 2001:


Article 39

(1) A patent application may be withdrawn by submitting a written request to the Directorate General.
(2) Further provisions concerning the withdrawal of an application shall be regulated by a Presidential Decree.

Article 88

A patent may be declared as canceled by operation of law if the patent holder does not fulfill his obligation to pay the annual fees within the period stipulated under this Law.

Article 115

(1) If within 3 (three) consecutive years a patent holder has not paid the annual fees as stipulated in Article 18 and Article 114, the relevant patent shall be declared to be canceled by operation of law on the date constituting the time limit for the payment for the third year.
(2) In the event the failure to meet the obligation regarding the payment of annual fees concerns the payment of annual fees for the eighteenth and subsequent years, the relevant patent shall be deemed void on the time limit for the payment of annual fee for the relevant year.
(3) The revocation of a patent on the grounds as referred to in paragraphs (1) and (2) shall be recorded and published.

In general, annuity fees in Indonesia may be paid within three years or 36 months. Late payment charges will be imposed if the fees are paid within the 13th to the 36th month.

Based on the above regulations, the non-payment of annuity fees within the three year period will cause the patent to become null and void. However, if no action is taken by the patent owner, the unpaid annuity fees for three consecutive years must be settled because the patent remains in force during the period for payment of the annuity fee. Thus, in the event three consecutive annuity fees are not paid by the patent owner, the patent will be considered null and void by law. However, the patent owner has an outstanding obligation to settle the annuity fees and late payment charges corresponding to the three years that the patent has remained in force.

To prevent the unexpected accumulation of unpaid annuity fees and late payment charges, it is recommended that a request for abandonment be filed with the Indonesia Patent Office, if it is indeed the intention of the patent holder to abandon a registered patent. It is also recommended that the request for abandonment be filed before the end of the relevant protection period in order to prevent payment of the annuity fees for the succeeding years.

For example, if a patent was filed on December 16, 2008, and granted on March 13, 2013, and the patent holder wishes to abandon the patent at this time, provided all back taxes have been paid, the request for abandonment must be filed by December 15, 2015, so that the patent owner only has to pay the seventh year annuity fees. If the request for abandonment is filed between December 16, 2015, and December 15, 2016, the patent owner has the obligation to pay the annuity fees for the seventh and eighth year protection periods. Further, if no annuity fee payment is made starting from the seventh year protection period, the patent will be deemed null and void by March 13, 2018, and the annuity for the seventh, eighth and ninth year protection periods will remain payable by the patent holder.

The DGIP sends a total of three notices. If there is no settlement of the outstanding annuity fees, the matter will be endorsed to the Ministry of Finance of the Republic of Indonesia as a debt collection matter with a further penalty of 10% of the total amount due.

In other words, abandonment by non-payment or non-action on the part of the patent owner will only lead to outstanding annuity fees that will later be considered a debt even when the relevant patent is deemed null and void by law.

While the Indonesia Patent Law has been in force since 2001, it is only in recent years that the Directorate General of Intellectual Property Rights (DGIP) started sending notices of nonpayment of annuity fees directly to patent owners. Thus, in 2013, patent owners started receiving notices to settle outstanding annuity fees for patents that have been abandoned a long time ago.

Until the law is changed, patent owners are well advised to follow the rules of patent abandonment in Indonesia. Otherwise, patent owners may find themselves owing the Government of Indonesia for accumulated annuity fees and late payment charges.

 

This article was first published in Asia IP on November 30, 2015. For more information, please visit http://www.asiaiplaw.com/ .

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

In a recent hearing at the Intellectual Property Office of Singapore (IPOS), Converse Inc. (the opponent) failed in its attempt to prevent the registration of Trade Mark Application No. T0705265E (the application mark) in Class 25, filed by Southern Rubber Works Sdn Bhd (the applicant). The application mark is reproduced on this page along with one of the registered marks which the opponent sought to rely on in the opposition proceedings.
The goods for which registration was sought were classified as footwear, clothing and headwear. The same was said for the opponent’s marks. The opponent also maintained that they are known for the star device, which appears in most of their marks and all of their products.
 
The opponent argued that, based on Section 8(2)(b) of the Trade Marks Act, the application mark is confusingly similar to several of the opponent’s earlier marks. The hearing officer, however, held that only the Converse mark shown on this page – registered trademark numbers T9710480C and T8705620B – ought to be considered under this ground of opposition. Both marks consist of two concentric circles very close together, a star in the middle and some words within the circles. The words can be seen to be similar in terms of the placement around the star although the words “CHUCK TAYLOR” going across the star in the opponent’s mark is the main difference between the two marks.

 

Converse All Star mark

 

Classic Jazz Star mark


The hearing officer further held that, being more prominent than the words, the star device in the centre of both marks is the distinctive component of each mark. Nevertheless, there are differences in the star devices with the opponent’s star device being in one solid colour while the star device in the application mark is half coloured and half white. Given the close similarities of the various elements in the two marks, the hearing officer held that the two marks are indeed visually similar.
 
Despite the star device being the prominent feature of both marks, it was held that in determining the aural similarity of the marks, the textual components of the marks are to be compared. In this aspect, the application mark consists of “CLASSIC” and “JAZZ STAR” while the opponent’s mark consists of “CONVERSE”, “ALL STAR” and “CHUCK TAYLOR” in stylized form. Both marks contain the brand names of each, being “JAZZ STAR” and “CONVERSE” and therefore they would aurally be referred to by their brand names rather than by the star devices deemed to be the distinctive element in each mark. Based on their textual components, the two competing marks are aurally dissimilar.
 
It was also held by the hearing officer that there was little conceptual similarity between the two marks given that both contained their brand names which were different.
 
When considering the similarity between the goods, the hearing officer held that it is important to determine how the goods are regarded for the purposes of trade. In the instant case, it was held that the goods of both are similar given that they are usually sold through the same trade channels and that consumers would consider it normal for such goods to be sold under the same mark.
 
In considering the likelihood of confusion between the competing marks, it was held that given the aural and conceptual differences, the similarities between them are not to a high degree. Due to the imperfect recollection of consumers, it was held that consumers would remember the opponent’s mark by the term “CONVERSE” and as such, the dissimilarity in the words that make up the two marks outweigh the visual similarity between said marks. Further there are various other star devices belonging to other proprietors on the Register and thus consumers would be used to seeing different forms of star devices and would not necessarily associate a star device with the opponent. As such, no likelihood of confusion was found.
 
As for Section 8(7)(a) of the Trade Marks Act relating to passing off, it was held that while the opponent has goodwill in their mark, there was no misrepresentation on the part of the applicant in respect of the opponent’s potential customers because of the lack of confusing similarity. With regard to Section 7(6) of the Act concerning applications made in bad faith, it was found that the opponent had not adduced any concrete evidence to show bad faith on the part of the applicant.
 
The outcome of this case goes to show that what is deemed to be the dominant element of a trademark is not always the most distinctive element and that other elements have to be considered as well.

 

 

This article was first published in Asia IP on August 31, 2015. For further information, please visit http://www.asiaiplaw.com/ .

 

 

 

 

The Supreme Court of the Philippines finally put to rest decades of dispute between Taiwan Kolin Corporation (TKC), a Taiwanese corporation, and Kolin Electronics Company, Inc. (KEC), a Philippine corporation. Both are engaged in the manufacture and sale of electronic products.
 
KEC Opposes TKC in 2006 on the Ground of Confusing Similarity 

This case stemmed from an opposition case lodged by KEC (herein, respondent) against an application for registration filed by TKC (herein, petitioner) for “KOLIN” for use in Class 09, particularly: television sets, cassette recorders, VCD amplifiers, camcorders and other audio/video electronic equipment, etc.

In its opposition, KEC argued that TKC’s KOLIN mark is identical, if not, confusingly similar to KEC’s registered KOLIN mark covering the following products in Class 09: automatic voltage regulators, converters, chargers, rechargers, stereo boosters, AC-DC regulated power-supplies, step-down transformers and PA-amplified AC-DC.

Ruling in favour of KEC, the Bureau of Legal Affairs of the Intellectual Property Office of the Philippines (BLA-IPO) rejected the application for registration of TKC and stated that a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor in respect of the same or closely-related goods.

The BLA-IPO noted that there was proof of actual confusion in the form of consumers writing numerous e-mails to KEC asking for information, service, and complaints about TKC’s products.

Not the Classification Alone, But the Description of the Products
 
Aggrieved, TKC appealed to the Office of the Director General of the IPOPHL. The director reversed the ruling and held that product classification alone cannot serve as a decisive factor in the resolution of whether or not the goods are related and that emphasis should be on the similarity of the product involved and not on the arbitrary classification or general description of their properties or characteristics. The director emphasized that “the mere fact that one person has adopted and used a particular trademark for his goods does not prevent the adoption and use of the same trademark by others on articles of a different description.”
 
And the Rivalry Continues to the Appellate Courts

This time, it was KEC who appealed to the Court of Appeals.

Ultimately, the appellate court sided with KEC instead and sustained the finding of confusing similarity, as held by the BLA-IPOPHL and found that there are “no other designs, special shape or easily identifiable earmarks that would differentiate the products of both competing companies. Further, the Court of Appeals ratiocinated that, “the intertwined use of television sets with amplifier, booster and voltage regulator bolstered the fact that televisions can be considered as a normal expansion of Kolin Electronics, and is thereby deemed covered by its trademark as explicitly protected by the Intellectual Property Code.”

Hence, TKC elevated the matter to the Supreme Court. Finally settling what seems to be a legal conundrum, with the lower tribunals contradicting each other, the Supreme Court ruled favorably for TKC. Stressing two main points, the court found that: first, the products covered by TKC’s application and KEC’s registration are unrelated, and second, the ordinary intelligent buyer is not likely to be confused.

In finding that the goods covered by both the marks are unrelated, the Supreme Court stated that “the classification of the products under the Nice Classification is merely part and parcel of the factors to be considered in ascertaining whether the goods are related. It is not sufficient to state that the goods involved herein are electronic products under Class 09 in order to establish relatedness between the goods, for this only accounts for one of the many considerations.”


Electronic Items are Luxury Goods

Credence was given by the Supreme Court to the petitioner’s contentions, to wit, “Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin Electronics’ goods which are power supply and audio equipment accessories.”

At this point, the Supreme Court also extended the ordinary intelligent buyer to electronic products, stressing that “the products involved in the case are, generally speaking, various kinds of electronic products. These are not ordinary consumable items, like catsup, soy sauce or soap which are of minimal cost.

The products of the contending parties are relatively luxury items not easily considered affordable.” As such, it was expected that a buyer is more discerning, cautious and discriminating when purchasing electronic products and would prefer to mull over his purchase. Confusion and deception, then, is less likely.
With this decision, the Supreme Court has considered electronic items as luxury goods by which an average consumer is expected to be more scrutinizing and has added electronic items to the list of products by which the “average buyer” doctrine applies such as jeans, underwear, cigarettes, tobacco and beer.

 

This article was first published in Asia IP on July 31, 2015. For further information, please visit http://www.asiaiplaw.com/ .

The Department of Intellectual Property (DIP) of Thailand has imposed a more stringent time limit for submitting formal documents for patent applications effective 21 July 2015.

Previously, patent applicants were allowed to file two 90-day extension requests, followed by a final 30-day extension request for submitting a notarized Power of Attorney, a Deed of Assignment (if applicable) and a Statement of Applicant’s Right to Apply for a Patent (if applicable). Under the new Regulation, patent applicants are required to submit the aforesaid documents within 90 days from the filing date in Thailand, which is final and non-extendable.  

The deadlines for submitting a complete Thai translation of the specification and a Certified Priority Document remain the same.
 
Accordingly, effective 21 July 2015, the important deadlines in Thailand are as follows:

 

 

 

 

 

 

 

 

* For non-PCT filings or national phase entries with list of inventors and applicants different from that in the PCT application
** If inventor is the applicant for non-PCT filings
*** For non-PCT filings with priority claim

The above requirement is part of Thailand’s efforts to accelerate the granting a license or permission to any person prior to doing any activity in Thailand.

The Intellectual Property Office of Singapore (IPOS) has issued a practice direction allowing the registration of  Graphical  User  Interfaces  (GUIs)  as  designs  under  the  Registered  Designs Act  (RDA) effective 11 December 2014.

One of the requirements to qualify for registration of design in Singapore is industrial applicability. In order to satisfy this requirement, GUIs must be applied to an article by any industrial process. Hence, when filing an application for registration of design via Form D3, the field provided for the article name must also indicate the article that the GUI is applied to, e.g. “electronic devices display, with Graphical User Interface applied to it”. Moreover, under  the  part  on  “statement  of  novelty” in Form D3,  the  applicant  can  select  the  option “Others” and provide a  statement  of  novelty  stating, e.g. “Novelty resides in the design applied to the electronic device as shown in the representation”.

GUIs may either be static (non-animated) or dynamic (animated). For a dynamic GUI, the GUI must be filed in an application consisting of a series of static representations where each representation, in consecutive order (drawing or photograph), shows a freeze-frame of the GUI in action. The parts to be claimed must be in solid lines while the parts not to be claimed must be indicated by broken or stippled lines, or shaded portions. The unclaimed portions must also be indicated in Form D3 in order to avoid any objections from IPOS. For clarity purposes, the applicant may provide a cover letter accompanying the Form D3 by describing the elements in the GUI for each representation.

Similar to filing normal design applications in Singapore, the registration of GUIs should contain a sufficient number of different views to completely disclose the appearance of the claimed design. The representations of the GUI may consist up to a total of 40 different views and at least 2 views should be filed for a single dynamic GUI. IPOS may allow the applicant to submit more than 40 views to be filed, upon filing of a request to do so.

Indeed, the possibility of registration of GUI is another milestone in designs regime in Singapore as it supports and encourages the growth of designs-related industries in the country.

 

This article was first published in Lexology on August 17, 2015. For further information, please visit http://www.lexology.com.

 

 

 

 

Lisbeth Enterprises Limited (the applicant), instituted a revocation action on the grounds of non-use against Procter & Gamble International Operations SA (the proprietor) for the subject mark which was registered in Singapore on June 1, 1981, in Class 3. The goods claimed were “Eau de Cologne, perfumes, essential oils, non-medicated toilet preparations, cosmetics, anti-perspirants, soaps, dentifrices and preparations for the hair.” While the applicant claimed that the mark should be revoked on the grounds of non-use for a continuous period of five years, the registered proprietor claimed that the subject mark had been used on a fragrance line endorsed by the singer Christina Aguilera.

The applicant operates fitness and beauty clubs in the Asia-Pacific region, with branches in Singapore, Malaysia, Thailand and Hong Kong. They applied for the word mark INSPIRE in Singapore, however the subject mark was cited as an earlier mark. Thereafter, the applicant commenced revocation proceedings against the subject mark.

 Inspire1

Subject Mark for Revocation

 

 

inspire2

Mark Being Used by the Proprietor

 

In this respect, the proprietor’s primary defence was that they commenced use of the subject mark prior to the institution of the revocation action by the applicant and that preparations for the commencement of use of the subject mark began before the proprietors became aware that the application for revocation might be made.

While considering whether the evidence of use of the subject mark submitted by the proprietor pertained to use in Singapore, the Registrar examined the dichotomy between the use of the mark on the internet and “the traditional tenet of territoriality in trademarks law.” The Registrar further took the view that the proprietor had taken no “active” steps with respect to the availability of the goods bearing the subject mark in Singapore beyond the listings available on the internet.

The Registrar further examined the date of use of the subject mark as submitted by the proprietor to support use of the mark in Singapore. The proprietor submitted that they had commenced use of the mark in early September 2008 and that preparations for use had commenced in 2007 before they were aware of a proposed revocation action. The revocation action was filed on October 16, 2008, in Singapore. The applicant argued, however, that they had filed a corresponding revocation action against the proprietor’s Hong Kong registration for the subject mark on February 18, 2008, as a result of which the proprietor would be well-aware before commencement of the use of the subject mark in Singapore.

While considering whether the subject mark had been used for the goods for which it is registered, the Registrar found that the subject mark is registered in respect of a wider specification than the use of the mark on the fragrance line endorsed by Christina Aguilera. In view thereof, the Registrar opined that even if the mark was considered to have been used in Singapore during the relevant period, the use would have been confined to specific goods and not for all the goods claimed under the subject registration.

The applicant further argued that the purported use of the mark by the proprietor did not pertain to the registered mark and was instead “INSPIRE”. In addressing this issue, the Registrar examined Section 22(2) of the Trade Marks Act which provides that “….use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered…”.The Registrar opined that “INSPIRE” and the registered mark would be considered to be substantially the same and therefore use of INSPIRE (if any) would be considered to be genuine use of the registered mark.

In considering whether the evidence of use of the subject mark as provided by the proprietor fulfilled all the criteria set out to establish genuine use of the subject mark, the Registrar found that the proprietor was unable to demonstrate genuine use of the subject mark in Singapore and that the grounds of revocation under Section 22(1)(a) and (b) of the Trade Marks Act succeed.

This decision by the Registry further reflects the policy consideration behind assessing genuine use of the mark in non-use revocation proceedings and sets out with clarity the considerations of internet use of the mark (i.e. mere advertisements of the mark on the Internet) as opposed to actual use of the mark (i.e. actual internet sales in Singapore of products bearing the mark), while evaluating bona fide use of registered marks in Singapore.

 

This article was first published in Asia IP on June 30, 2015. For further information, please visit http://www.asiaiplaw.com/ .

 

 

 

 

Bridgestone Corporation (the Opponent), a Japanese tire manufacturer, successfully opposed the registration of R-STONE in the name of Jianxian Rubber Co., Ltd (the Respondent) in Class 12. In support of its opposition, Bridgestone argued that it was the first to use and register BRIDGESTONE in connection with the design, technology and manufacture of tires. Tracing the history of the first “BRIDGESTONE” tire in 1930, the Opponent argued that the ownership and association of the word “stone” as a distinctive element of its house mark BRIDGESTONE was bolstered by the acquisition of Firestone Tire & Rubber, along with the mark FIRESTONE in 1998. The Opponent also claimed that BRIDGESTONE is a well-known mark in view of its numerous trademark applications/registrations across the globe, totaling about 500, in addition to approximately 243 domain name registrations.

 STONE

The Opponent further claimed that it had invested enormous resources in advertising and popularizing its BRIDGESTONE mark in the Philippines, and that the mark had been featured in various newspapers and magazine articles. Also, the Opponent had recently opened a 1,000-square meter showroom and service center in Bonifacio Global City, Philippines.

A Notice to Answer was issued and served on the Respondent on December 13, 2013, but the Respondent did not file an answer. Thus, the Respondent was declared in default.

Ruling in favor of the Opponent, the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL) noted that the Opponent had consistently used the word “stone” in its marks. It ruled that even if the word “stone” is a common English word, it is neither descriptive nor generic of tire products and therefore is considered distinctive. Consequently, the BLA-IPOPHL said that the Respondent could not use the word “stone” as the prevalent feature of its own mark.

The BLA did not find notable distinguishing features between the competing trademarks and held “that the Opposer’s marks begin with either the words ‘fire’ or ‘bridge’ while that of the Respondent-Applicant’s with a mere ‘R-’ is of no consequence. There is the likelihood of the consumers being confused. Confusion cannot be avoided by merely adding, removing, or changing some letters of a registered mark.”

This decision is consistent with several earlier decisions of the BLA-IPOPHL, in which it sustained oppositions filed by Bridgestone against applications for the marks RIVERSTONE and AUSTONE, both for use in Class 12. The BLA-IPOPHL finally concluded that “the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed.”

Thus, Bridgestone’s ownership over the STONE marks in Class 12 and the distinctiveness of these marks for “tire products” have been further set in stone.

The decision is final, as the Respondent chose not to appeal.

 

This article was first published in INTA Bulletin on June 15, 2015. For further information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.

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